Universal Electronics v. Roku
Panel: Cunningham, Linn, Stark
The Federal Circuit affirmed the PTAB's determination that claims 1–7, 9–13, 15, and 16 of Universal Electronics' U.S. Patent No. 10,930,276 are unpatentable as obvious over a combination of Hart-787, Fu, and Rosenberg. The '276 patent claims a method for controlling an appliance by establishing a noise threshold using environmental sound data, receiving speech input, determining whether the current noise level exceeds the threshold, and automatically reducing the appliance's volume in response. Universal Electronics challenged the Board's motivation to combine the prior art and argued that Roku improperly raised a new combination theory in its reply brief.
The court's analysis turned on the proper application of combining prior art under KSR and the boundaries of reply arguments in IPR proceedings. The court found substantial evidence supporting the motivation to combine, emphasizing that a petitioner need only show that a combination is "a suitable option," not "the best option," and that a known technique addressing a known problem provides sufficient motivation under Intel Corp. v. PACT XPP Schweiz AG. The court rejected Universal Electronics' contention that Roku's reply improperly expanded the petition's theory, finding that the petition itself proposed modifying Hart-787 with Fu's predetermined threshold and then further modifying that combination with Rosenberg's technique of establishing the threshold based on environmental noise levels. The court also applied the standard that references cannot be attacked individually when the rejection is based on a combination of references.